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Thursday, 3 April 2014

Katfriend and occasional guest blogger Lucas Michels (Ironmark Law Group PLLC) has taken time out from his busy IP practice and blogging activities for the IP Exporter to do some serious mouse-watching for us. This is what he saw:

The application was accepted by a USPTO examining attorney and published on March
4, 2014. Less than a week from being granted registration, counsel for Disney
filed a 90 day Extension Request pursuant to 37 C.F.R. 2.102,in order to examine the application for possible grounds of opposition. The USPTO’s Trademark
Trial and Appeal Broad granted the motion on March 28, 2014.

Although Disney has not commented as to why it filed
the extension, it is likely that it did so because the application’s design
mark bears a resemblance to Disney’s famous cartoon character Mickey Mouse.
Disney maintains dozens of character mark and design mark registrations for
Mickey Mouse in the U.S. and throughout the world. Although Deadmau5’s design
mark is arguably different and distinct from these Mickey Mouse trade marks,
Deadmau5’s application proposed registration of the design mark across nine
classes of goods and services. Such registration is broad enough to have likely
caused Disney’s trade mark counsel to be justifiably concerned, especially as
U.S. copyright protection for Mickey Mouse has expiredin some of Disney’s early
cartoons of the famous mouse, with more cartoons and images of the same
expected to enter the public domain in the coming years.

Topo Gigio: representing the interests of European mouse-ears since 1959

If Disney
does object to the application under 15 U.S.C. § 1063, it will likely do so based on
damage to Disney’s brand, particularly the dilution of Disney’s multiple Mickey
Mouse-related trade marks. As dilution
requires showing that an opposing party’s mark was famous prior to the opposed
application (15 U.S.C. § 1125(c)), Disney
would likely be able to convincingly satisfy these requirements. Mickey Mouse
is one of world’s most famous children’s cartoon characters and has been in use
by Disney since 1928, 83 years before Deadmau5’s U.S. trade mark filing. Plus, Deadmau5’s
electronic music that is often played at festivals and clubs where drugs are
made available is easy prey for Disney’s counsel to show that use of the application’s mouse image by Deadmau5 would tarnish Disney's wholesome image with
children and families.

What is
interesting about this story, besides the juxtaposition between the wholesome Mickey
Mouse and drug-fuelled electronic music, is that there is no indication that
Disney attempted to enforce its rights against the same Deadmau5 trade mark in
other countries. The application in the U.S. was based on a prior foreign
registration filing (Section 44(e)) in Australia in 2009
(Registration 1330112). If
Disney had opposed Deadmau5’s Australian registration in 2009, the application
would have likely never been filed in the U.S., much less accepted by the USPTO,
or published for potential registration.

There is no indication
as to why Disney did not oppose Deadmau5’ Australian trade mark registration. It
is an assumption of trade mark practitioners like myself that major multinational
media brands such as Disney monitor trade mark registrations throughout the
world, and especially in major markets such as Australia, in order to protect
their most cherished brands. After all, what is a more famous and prized brand
than Mickey Mouse? Yet, Disney’s apparent inaction towards Deadmau5’ Australian
trade mark registration shows that a failure to oppose a trade mark registration in
one market can create a negative precedent in other markets.

We wait with interest to see how Disney’s potential U.S. opposition will proceed.